WEDNESDAY, 17 OCTOBER 2012Heart, soul and US design patents -- and partial claiming

Cooper Woodring

Class 99 is delighted to be hosting a second guest piece from our friend Sarah Burstein, who will soon be coming over to Europe to participate in a very interesting all-star Oxford conference on the future of design protection. Sarah's current thoughts, below, focus on "partial claiming" as a means of enhancing U.S. design protection. This is what she says:

Heart,
soul and US design patentsFast
Company has a new interview with industrial
designer—and design patent expert witness extraordinaire—Cooper Woodring. The
entire interview is fascinating and a must-read for anyone interested in US
design patent law. This portion, however, really stood out to me:

FC: The most common kind of patent is a
utility patent, which covers a product's function. They’ve long been the
subject of litigation. Why haven’t design patents?Woodring:
Twenty years ago, design patents were considered unenforceable because
applicants, at the behest of lawyers, were too specific in their sketches—they
depicted all the gory details of an entire product. Copycats would then argue,
“Our design is different. We changed the screws.” Now companies only patent the
parts of a product that represent its “heart and soul,” like Apple's “flat,
transparent, edge-to-edge front and rounded corners.” That’s new, and
enforceable (emphasis
added.)

Although I haven’t done any empirical
research on this topic, it does appear that some companies are increasingly
utilizing partial claiming in order to obtain broader design patent rights. But
these companies don’t only claim the
“heart and soul” of their designs.The
game works like this. First, the company files an application that claims the
entire design of a new product. Then, while that application is pending, the
company files one or more continuation applications(or, in certain
circumstances, divisional applications) that claim discrete
portions of the design.

While
these later-claimed portions might cover the “heart and soul” of the overall
design, there is no reason to believe that this is always—or even often—the
case.To
the contrary, it appears that patentees use this strategy in order to broaden
their claims to cover competing products. (Perry Saidman explains
how this works, with an illuminating real-life example, in section III(C) of
this article.)

So
just because a design patent only claims a part of a design, that doesn’t
necessarily mean it claims an important part—let alone the “heart and soul”—of
the design. It might just mean that the patentee found that portion to be a
useful weapon against its competitors.